Amendments to the Indonesian Patent Law, which were passed by the Indonesian Parliament on 28 July 2016, are expected to come into effect on 28 August 2016.
There are a number of key amendments to the law including:
Second use or second medical use claims no longer allowed
Claims that are directed to a new use of a known product and a new form of an existing compound which does not offer significant increase in efficacy (e.g. second use and second medical use claims) are no longer allowed.
Exemptions from Patent Infringement
The following acts are excluded from patent infringement:
- importation of a pharmaceutical product which is patented in Indonesia, and the product is legally marketed in another country without the permission of the patent owner; and
- manufacturing of a pharmaceutical product which is patented in Indonesia within five years before the patent protection expires, for the purpose of licensing and marketing after the patent protection of the patent expires (i.e. “Bolar exemption”).
Under the old law, annuities could be paid up to three years from the due date. If annuities were not paid within three consecutive years, the patent would be deemed null and void. If the patent was allowed to passively lapse due to non-payment of annuities, a patentee is still obligated to pay the outstanding annuities even though the patent is null and void.
Under the new law, a patent will be considered null and void if annuities are not paid by the due date. However, an extension of up to 12 months can be requested. More importantly, the obligation to pay outstanding annuities under the old law will no longer be an issue for patentees.
Scope of Simple Patents
In addition to products, the scope of protection of a simple patent (“petty patent”, “utility model”) has been expanded to include new processes or development of an existing process.
Post grant opposition
Post grant opposition of a patent is now available to third parties.
Expansion on scope of compulsory licenses
Under the new law, the scope of compulsory licenses has been expanded to include:
- Grant of a compulsory license to produce a pharmaceutical product that is patented in Indonesia for the treatment of a disease;
- Grant of a compulsory license to import a pharmaceutical product that is patented in Indonesia but cannot be manufactured in Indonesia for the time being for the purpose of treatment of a disease; and
- Grant of a compulsory license to export a pharmaceutical product that is patented in Indonesia and is manufactured in Indonesia for the purpose of treatment of a disease. This is done upon request by a developing or a least developed country.